Mary and fellow WG members,

Unfortunately I have been working on several large projects with clients in North America that have me working the phone most daystar 8am conference calls (which for me – being in Barcelona - begin at  5pm onwards.  I have another client call tonight so I will not be able to make the call today.

Please make the following known to the group and retain it in the WG records

 

I remain in favor of the following principals

 

A.            That by filing a UDRP complaint and agreeing to the “Mutual Jurisdiction” the complainant (including the NGO) is waiving any objection to jurisdiction of the mutual jurisdiction.

 

B.            That by relying upon “trademark” rights the complainant is by definition admitting to a commercial activity.

 

C.            There has been no evidence that NGOs have refrained from filing a UDRP because of their concerns over sovereign immunity.

 

D.           NGOs have in the past filed UDRPs – evidence that the Mutual Jurisdiction provisions are not a limiting factor.

 

*   Assertions of phishing are merely that – assertions.  Assertions are not evidence.

 

E.            NGOs have alternative means to press their claims in a UDRP (or other legal) forum – e.g. by assignment, etc.

 

*   Phishing and similar conduct can be appropriately prosecuted by law enforcement on behalf of the NGO.

 

F.            That if the NGO successfully asserts sovereign immunity in a post UDRP proceeding, the underlying UDRP decision should be vitiated.

 

I have previously explained my additional rationale for this position, which is summarized here:

 

1.             The UDRP was created as an streamlined administrative action in which:

 

a.    Notice and service of process was simplified – no confirmation of notice is required.

b.    Filings are limited by page/word length.

c.    Evidence is severely limited in both form and quantity

d.    Assertions are often treated as evidence.

e.    There is no “precedent” value and panelists are neither required nor inclined to follow relevant judicial decisions.

 

2.             Section 4(k) was a material part of the bargain to permit a losing registrant the right to challenge the matter before a real court under real rules guarantying due process.

 

3.             NGOs were certainly around at the time.  Their input was heard.  The UDRP was nevertheless established – with the blessing of WIPO I might add.

 

4.             There is no concrete way to establish what constitutes an NGO.  NGOs come in a variety of shapes, sizes and qualities.  Some are expressly not recognized by nation states.  This in turn rises substantial issues of proof- which in the context of the limited administrative nature of the UDRP is inappropriate.

 

5.             The UDRP is a contractually created process mandated by ICANN.   All registrants must agree to application of the UDRP (or similar ADR) as a condition to registration.  The UDRP Policy itself is not based upon recognized jurisprudence and is constantly shifting in meaning and scope as panelists seek to further streamline the process by largely ignoring the express language of the Policy.  It also obligates the registrant to abide by an ever-changing landscape of trademarks (e.g. registration and use of a domain name in PPC followed by a later trademark registration would place the registrant at risk of losing the domain name because PPC use is rarely recognized and at least a minority of panelists continue to apply retroactive standards such as those found in MummyGold and other decisions attempting to retroactively apply Paragraph 2 to the Policy).

 

6.             Trademark rights have been proscribed to a “standing” requirement that presents no meaningful condition.

 

7.             The requirement that the trademark be “identical or confusingly similar” to the asserted trademark has been proscribed such that the condition is met whenever the trademark appears (in whole or significant part) in the domain name.  Thus, for example, the rule supports finding that the domain name “the.com” is confusingly similar to a trademark for “Theatre” because the letter sequence “the” appears in both.

 

8.             Panelists rarely apply trademark analysis to the registrant’s use of the domain name.

 

UDRP Appeals Process.

 

I have forwarded a prior email to Mr. Beckman and the WG on the subject of a UDRP appeal process – organized and managed in a manner similar to the DRS process at Nominet.  This is not a change of position as I favor an appeals process for all UDRP participants. 

 

As I stated in my communications, such an appeals process is not a replacement of Section 4(k) or the mutual jurisdiction certification.  Instead it should be an economical means of correcting poorly reasoned decisions by inexperienced or biased panelists – economical in that it limits those situations in which the parties must spend tens of thousands of dollars in litigation.

 

I strongly disfavor any appeals process that would be unique to NGOs or that would remove the protections of Section 4(k) or the mutual jurisdictional certification.